Practice

Anti-Counterfeiting and Brand Protection

Panama is a country with 3.6 million habitants. It is a small market but due to its unique geographic position, it has a historical competitive advantage in regards to other countries of the region. This position has allowed Panama to focus its economic strategic development in services and economic activities complementary to the Panama Canal, inaugurated in 1914 and its expansion was inaugurated on June 26th, 2016. The Panama Canal allows the transit of container vessels with a capacity of 14.000 TEU (Twenty-Foot Equivalent Unit).
This position has helped the Colon Free Trade Zone, created in 1948, to become the first free trade zone of the Western Hemisphere and the second worldwide after Hong Kong. Moreover, it has also promoted the development of port activity, with the existence of five (5) container ports in Panama, two (2) in the Pacific coast, and three in the Atlantic coast, which receive approximately 6 million TEU (Twenty-Foot Equivalent Unit) containers per year.

Since 1903, Panama has carried out efforts to develop an economy of services, within its small territory of only 75.420 km2. Currently, those developmental efforts are organized and structured in the “National Logistic Strategy of Panama towards year 2030”, prepared by the Logistic Cabinet, under the Ministry of the Presidency of the Republic and published in June 2017.

https://www.presidencia.gob.pa/pdfs/Estrategia-Logistica-Nacional-Resumen-Ejecutivo.pdf

The main reasons that have allowed Panama to become a country of transit and distribution of all kinds of merchandises are the following:

the free circulation of the U.S. dollar, an international banking sector, a financial center, a legislation that promotes the development of international commerce, the aviation connectivity of Tocumen International Airport and the development of free trade zones and logistic areas, that allow transnational companies to carry out their distribution operations in the region from Panama.
Unfortunately, these advantages have been used by some businessmen to distribute and commercialize merchandises with counterfeited trademarks and products that infringe copyright. MORAN IP is fully qualified to enforce intellectual property rights of brand owners and to develop the following activities:

• Design Brand Protection and Anti Counterfeiting Strategies in Panama and in other sensitive countries or those susceptible to illicit commerce in Latin America and the Caribbean.
• To carry out research in the local market and free trade zones in order to identify counterfeited products.
• To work, jointly with law enforcement and IP Prosecutors in raids and search operations, apprehension of counterfeited products and other products that infringe Intellectual Property Rights (IPR).

MORAN IP counts with a specialized team of litigation attorneys in Brand protection and anti-counterfeiting, qualified to protect the most appreciated intangible assets with a clear understanding of port operations, free trade zones and Panamanian domestic market operations.

Anti-Trust

In Panama, Industrial Property Rights (IPR) infringements do not constitute acts of unfair competition. Nevertheless, some acts contrary to the commercial good faith can harm intellectual property rights and consequently, could constitute acts of unfair competition. In our experience, many trademark distributors, once they end their relationship with Brand owners, carry out unfair competition acts that harm Industrial Property Rights (IPR). Some acts of unfair competition, such as dilution of trademarks, collusion, negative comparative publicity, fraudulent acts to divert the customers of an establishment or to induce or cause an error or misunderstanding in the consumer, are punished by the Civil and Criminal Panamanian Law.

MORAN IP has analyzed all the rulings and judgments and has experience in litigation before the Third Superior Court of Justice of Panama, the only competent court that has jurisdiction to consider civil cases of Unfair Competition. It also has experience before district attorneys and criminal judges that have jurisdiction to consider cases of Unfair Competition Crimes, which are penalized with 3 years of prison. The team of litigant attorneys of MORAN IP are qualified to analyze and provide solutions within the scope of Unfair Competition in Panama. Our founding partner, Hugo Moran R., has been recognized as a specialist in matters such as anti counterfeiting and Brand protection in publications such as Chambers and Partners, Legal 500 and World Trademark Review.

Brands Strategy

Since our inception, we provide a deep and effective legal and judicial analysis in order to offer a quick solution for the definition of the name of your new products, to reduce legal risks and assurance of its effective use in the market. MORAN IP is qualified to do a deep screening before the development and launching of your new trademarks in the local market.

Commercial IP

Panama is an emerging market with business opportunities for multinational companies. Since a decade ago, the hotel sector, the pharmaceutical industry and multinational companies in general have established in Panama to carry out their regional operations. There are more than 120 multinational companies established in Panama, that carry out back-office operations in Panama and with this, the need for legal advice is imperative in commercial matters regarding the protection of their intellectual property assets and in corporate and regulatory matters. MORAN IP counts with a specialized team for the review of your commercial Intellectual Property transactions, franchises, distribution contracts and regulatory matters.

Distribution

Panama counts with the main commercial free zone of Latin America, ranked second in the world. The Colon Free Zone, is the main distribution center of all kinds of merchandises for Latin American markets. MORAN IP has the experience in the different forms of distribution of merchandises, that not only includes the traditional distribution form, but the multi-market concept, in which Panamanian companies provide the manufacture of high-end products, storage, repackaging and relabeling for multinational companies meant for the distribution of their products worldwide. MORAN IP offers the counseling required so that the distribution activities comply with legal norms in force in the Republic of Panama, mainly those regarding regulatory, customs and the free zone legislation.

Copyright

Regarding copyright matters, Panama has one of the most efficient legislation for the protection of its artistic, literary and scientific works. Many of the Intellectual Property Rights (IPR) can also be protected as copyright. Additionally, the District Attorney´s Office Specialized in Crimes against Intellectual Property and the Customs National Authority have a clear understanding of the copyright legislations and ensure it is complied.

MORAN IP offers counseling for the due protection of your copyright and the effective vigilance of said rights in Panama.

Customs Enforcement

Thanks to its geographic position and to the Panama Canal, Panama has become a country of obligatory transit of merchandises. Its service economy has developed the most important port and logistic activity of the region. An estimate of 7 million of TEU (Twenty-Foot Equivalent Unit) containers transit by the Panama Canal, of which 80% are cargo in transit. Panama counts with the first legislation that made effective the retention of products in transit in the year 1996, following the recommendation from the Agreements on Aspects of Intellectual Property Rights related with the Commerce (Agreements known as ADPIC or in English TRIPS), that constitute the Annex IC of the Treaty that lead to the creation of the World Commerce Organization in 1994. The legal team of MORAN IP and its founding partner have been recognized as one of the main contributors in the effective implementation of border measures to protect industrial property rights, providing periodic trainings to customs and port authorities, and by sharing tendencies and knowledge to help fight illicit commerce.

MORAN IP designs cost-effective strategies in order to implement customs enforcement in Panama and regional-wise. We analyze trademark portfolios for industries, and implement the strategy based on the catalogues of products that are more susceptible for counterfeiting or forging, history of previous cases, routes and tendencies, to recommend the submission to customs recordal those most sensitive trademarks, protecting the brand owners budget. In the same way, MORAN IP, collaborates and trains port officers that carry out risk analysis to detect counterfeited cargo, that belong to the UNODC – WCO (World Commerce Organization) – Container Control Program operating in Panama and in more than 10 countries in Latin America and the Caribbean, some of which are considered transit ports. The MORAN IP team maintains constant communication with Panamanian and regional authorities to facilitate information on trademarks and to collaborate in the fight against illicit commerce.

Data Protection

Most of the clients of MORAN IP have operations in Panama, through stores and regional distribution centers, where sensitive and personal information from their clients, is gathered. The MORAN IP team provides counseling in matters of data protection, and data privacy, for an adequate preservation of their personal information and to avoid claims from the costumers.

Computer attacks are frequent in the data base of companies. Panama counts with an effective criminal legislation that fights cybernetic crimes to avoid extortion, electronic fraud, attacks to computer systems, attacks by hackers, capture of information, copyright breach, child pornography, pedophilia, refusal of services, confidential information breach, among other types of criminal conducts.

MORAN IP works closely with the Computer Security District Attorney´s Office and with investigators of the Computer Crimes Division of the National Police, to help with cybercrime investigations.

Design Patent, Industrial Design and 3D Marks

The design of products is one of the main activities of companies, in order to add an aggregate value to its Industrial Property rights. The shoe, luxury and telephone industries have a clear understanding of the value provided by the design of products. This is why the effective protection of its products is needed through the patent design, industrial design and 3D marks, because the designs of the products are the most vulnerable to infringements by third parties. MORAN IP helps/contributes to this effective protection of patent design, industrial design and 3D marks, with its specialized team in registration proceedings of their rights and its corresponding protection.

In-Market Surveys

Even though, the Panamanian market is comprised of 3.4 million habitants, the Colon Free Trade Zone is the second largest free zone of the world and the first free zone in the Western Hemisphere. It is the main center for the storage and distribution of merchandises from Latin America and the Caribbean. The main multinational companies operate within the Colon Free Trade Zone.

MORAN IP counts with a team with vast experience that carry out market researches not only in the domestic market (in-market) but also in the Colon Free Trade Zone.

IP Crime Litigation

Panama is ruled by the accusatorial criminal system, whereby investigations on Industrial Property
infringements are carried out by the law enforcement under the supervision of the Intellectual Property Prosecutor. The team of attorneys of MORAN IP, have collaborated and closely work in the investigations done by law enforcement agencies. Intellectual Property crime is one of MORAN IP specializations and we count with attorneys specialized in criminal matters qualified to carry out investigations pursuant to the law and to handle strong cases that do not put our clients at risk.

The team of attorneys of MORAN IP has vast experience in courts, because we participate and attend hearings on a daily basis in the accusatorial criminal system of Panama since we understand the methodology and criteria of guarantee judges, courts and appeal courts. The MORAN IP team has attended more criminal hearings than others for Crimes of Intellectual Property during the past 20 years. Its founding partner, Hugo Moran R., has been internationally recognized as one of the main litigants in Panama, in publications such as Chamber and Partners, World Trademark Review (WTC) and Legal 500.

IP Due Diligence

The MORAN IP team has participated in transactions for the acquisition of important companies in Panama, in the beer, hotel and consumption sectors, providing an analysis and detailed and precise x-ray of the intellectual property assets of the companies. The experience and support of MORAN IP in Intellectual Property Due Diligence has provided multinational companies a better position to close acquisition transactions of local companies.

Parallel import and grey market

Trademarks and other Intellectual Property Rights Portfolio Management and Strategy Counseling.

For almost two decades, the MORAN IP team and its founding partner Hugo Moran R. has handled and protected trademark portfolios of important brand owners of the shoe, technology, beer, mobile, tobacco, sport, training, luxury articles, industries, among others, delivering a very high level of practice. We have the experience to handle and manage your Intellectual Property Rights portfolio by applying fair fees and keeping high standards of service cost-effectively.

MORAN IP has developed a database called BACH ® that assists us to manage and, handle your Intellectual Property portfolio. BACH ® has been developed to understand the necessity of the brand owners to keep and ensure the proper protection of their Intellectual Property Rights. BACH ® is a tailored solution for the effective management of searches, registration and renewal of trademarks, design patent, industrial design and any Intellectual Property Rights, and the handling of civil (prosecution) and criminal litigations (IP crime).

Prosecution

MORAN IP team is also specialized in prosecution. We have ample experience advising clients in prosecution such as opposition, cancellation and nullity actions, and have attended and represented clients in courts since the creation of the Intellectual Property Courts in 1996. Our attorneys have also experience in infringement actions, handling key civil cases and obtaining important damages in favor of brand owners.